Lead intellectual property development and management for the Medical division. Develop and maintain intellectual property portfolio (including patents, trademarks, trade secrets, etc.). Ensure effective product marking and support surveillance. Perform or arrange for appropriate searches to verify patentability, validity and right to use. Provide organizational intellectual property training.
- Develop patent portfolios for client groups in key areas of interest.
- Review invention disclosures and influence patenting decisions.
- Meet with management, engineers and marketing personnel in client groups to understand how IP can support their goals and objectives.
- Develop, implement and continuously improved best in class procedures and systems for IP management..
- Focus on initiative, driving innovation, and customer service.
- Support finance and legal with agreements related to your support areas in order to help ensure IP interests are protected and proper payment of royalties are made over time.
- Work with outside counsel in preparation, filing and prosecution of patent applications.
- Investigate development status, plans to commercialize inventions, novelty, etc. to support decisions to file corresponding international patents.
- Develop and execute continuation strategy for patent prosecution.
- Analyze and work withinternal stakeholders and outside counsel to respond to Office Actions.
- Investigate patent utilization, commercial offensive and defensive value to help make decisions to maintain or abandon patents.
- Initiate patentability, right to use, and state of art patent searches.
- Support patent assertions and defense.
- Bachelors of Science Degree in Electrical, Mechanical or Biomedical Engineering or similar scientific discipline.
- 10 years minimum experience in development and research in the medical device industry or other appropriate, related industry.
- 5 years minimum experience managing commercial intellectual property including: prosecution, right-to-use, litigation, due diligence activities; Patent Agent registration is encouraged.
- Demonstrated expertise in patent searches.
- Demonstrated expertise in the function, clinical issues, and performance requirements of medical devices.
- Demonstrated experience in preparing and evaluating invention disclosures and patent applications with medical devices or closely related subject matter.
- Applied understanding of USPTO and EPO patent prosecution processes.
- Demonstrated verbal and written communication skills, ability to influence others, and to work independently.
- Demonstrated ability to be effectively/appropriately assertive in order to challenge concepts and inspire innovation